Troublesome Oath Requirements Revised

As anyone that has ever filed a patent reissue can attest, the inconsistent application of oath requirements can be maddening. In fact, the vast majority of patent reissue applications are delayed due to such informalities —aggravating an already significant problem.

As the America Invents Act has required that the “deceptive intent” component of patent reissue oaths be stricken, the USPTO has taken the opportunity to fix a few other problems while they were under the hood. Last Friday, a Notice of Proposed Rule making entitled “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act.” (here)
Continue Reading Patent Reissue Oath Practice Revised by USPTO

patent reissue oathMost practitioners are well aware that disputes with the USPTO over formal oath requirements in patent reissue are the rule, not the exception.  I have written extensively in the past as to the significant delays caused by this seemingly straight forward formal requirement.

In most cases, the dispute relates to a lack of specificity in identifying the error to be corrected in the patent reissue application. While in many cases the correction necessary is relatively minor. However, in most cases the objection raised relative to the oath does not come from the examiner, but instead, a Quality Assurance Specialist (QAS) of the USPTO. Thus, it is not uncommon to contact the examiner to request a recommended change to an oath to finally settle the dispute only to have the examiner inform you “I think it’s fine, but the QAS has some issue that I don’t really understand.” This leaves the Patentee with no efficient means to address the problem in a timely manner. This type of roadblock is especially aggravating in broadening patent reissue applications.

Continue Reading Defects in Patent Reissue Oaths Inefficiently Cured

Upward of 70% of Patent Reissue Filings Include a Defective Oath

oaths

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As most practitioners are well aware, defective oaths in patent reissue are the rule, not the exception. As the chart above demonstrates for patent reissues filed in 2005, such oath problems lead to longer patent reissue pendencies.

With narrowing patent reissue filings constituting the bulk of patent reissue applications at the USPTO, it is not surprising that the impact of defective oaths are more pronounced in this sub-category. For narrowing reissue applications filed in 2005, applications without any oath problems were completed 1.14 years faster (1.74 vs 2.88 years) than those with oath problems.

Surely, both the USPTO and stakeholders share the blame equally for these recurring problems. As demonstrated just yesterday, these issues are rarely resolved prior to appeal.
Continue Reading Defective Oaths Plague Patent Reissue Filings

Comparing Claims in Reissue Oath Haunts Patent HolderOn Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?Claim construction issues aside, recent BPAI cases illustrate the importance of oaths in patent reissue. All too often, the preparation of the oath is deemed ministerial, and ignored in favor of prior art/claim drafting concerns. Oath preparation and wording should be a focal point of any patent reissue effort.When identifying an error in an original patent via added/amended claims in patent reissue, comparison to the originally issued claims is very attractive. This practice is not necessarily wrong, but can have unintended consequences as demonstrated by Lucky. By making such direct comparisons, the scope of the newly added claims becomes unnecessarily intertwined with the issued claims. For example, the oath in Lucky Litter would have been better off stating “new claims 23 through 48 are directed to the automated comb operation of a self cleaning cat litter box, albeit independent of any specific sensor or means-plus-function structure of the issued claims.” (I know, easy for me to say 10 years after the fact)It may be that the Patentee in Lucky still would have lost, oath or not. Nevertheless, the case demonstrates that oath filings are far from form practice, and can come back to haunt Patentees.  Finally, the patent is subject to an ongoing ex parte reexamination (90/010,389) and, as you may have guessed, new claims were added expressly reciting “cat exit.”  (see new claim 5

On Wednesday, the Federal Circuit reversed a decision of the ITC that excluded the imports of Lucky Litter, LLC. The case (here) related to cat litter boxes having an automated cleaning feature. In reversing the ITC, the CAFC found that the “predetermined event” recited in claim 33 of the patent at issue (RE 36,847), was not limited to a cat exiting the litter box.

Prior to seeking patent reissue, claim 1 of the patent recited a “cat exit sensor for sensing a cat exit” and a “delay means.” The Patentee filed a broadening patent reissue to remove these features. The reissue application oath explained that “[i]n particular, claim 1 of U.S. Patent 5,477,812 contains recitations regarding a cat exit sensor and delay means which are too limiting of the invention and unnecessary in view of the prior art. Claims 23 through 48 of the reissue application have limitations similar to those of claim 1, but define the invention with greater breadth.”

The CAFC performed a traditional Phillips analysis of the ITC claim construction and held that “predetermined event,” by plain meaning, could not be limited to “cat exit.”  Still, the statement in the oath was cited by the court as a guidepost of the broader meaning of the claims added in reissue. Hindsight always being 20/20, what could the Patentee have done to potentially avoid this result?
Continue Reading Patent Reissue Oaths Can Impact Claim Interpretation

MPEP § 1451 cautions applicants against filing a copy of the oath/declaration and assignee consent from the parent reissue application when a continuation reissue is filed without abandonment of the parent reissue application. It indicates that in such circumstances OPIE should accord a filing date to the continuation reissue application and send out a notice

MPEP § 1414.01 provides concise guidance regarding when a supplemental reissue oath or declaration is required and what it must contain. A supplemental oath/declaration is required in a reissue application where any “error” under 35 U.S.C. 251 has been corrected and the error was not identified in the original reissue oath/declaration. The supplemental reissue oath/declaration